A Pair of Experiments in the Beijing IP Court

Back in 2012, I noted that “[t]he Chinese civil judiciary is pursuing reform and gaining experience, as Deng Xiaoping noted, by crossing the river by feeling the stones. A disproportionate part of that judicial experience is also being gained from the relatively small numbers of IP cases in the Chinese courts.” One notable and welcome source of those reforms is the new Beijing IP court, which is also serving as a base for experimenting in the development of a system of case law with Chinese characteristics. I believe that the most notable development in Chinese IP in 2015 has been the role the courts are playing in judicial reform generally. I have been privileged to hear Chief Judge Su Chi and his team from this court speak several times since his court was established, and have never failed to be impressed by their depth of knowledge and passion for judging.

There have been two notable year-end developments by the Beijing IP court. One case involved the use of en banc decisions to invalidate a trademark normative document. In this case the IP Court made an en banc decision to implement Article 21 of the SPC’s Interpretation on Practical Questions regarding the Administrative Litigation law of the PRC中华人民共和国行政诉讼法〉若干问题的解释 (April 28, 2015) (the JI). Article 21 of the JI provides that “When normative documents are not in accordance with law, the People’s Court shall not use it as proof that the administrative action has a legal basis, and shall explain this in the reasoning of its decision. The People’s Court’s decision shall make recommendations on disposition of the normative document to the enacting agency, which can be copied to the government organs at the same level of the enacting agency, or to one government level higher.” (规范性文件不合法的，人民法院不作为认定行政行为合法的依据，并在裁判理由中予以阐明。作出生效裁判的人民法院应当向规范性文件的制定机关提出处理建议，并可以抄送制定机关的同级人民政府或者上一级行政机关。)

The other case, no less dramatic, involves what may be the publication of a dissenting period. Both of these developments occurred this month (December 2015).

The case arising under Article 21 of the SPC Interpretation involved an interpretation of the State Administration of Industry and Commerce regarding what constitutes a “day” for purposes of implementing a change in trademark classifications. The IP Court found that the notice’s definition of a “day from a 24 hour period to a month exceeded the scope of power to explain the law, ruling in favor of plaintiff who claimed to have filed its trademark in advance of two other parties who filed one week and three weeks after plaintiffs filing.

When this case was heard in September, Chinese media talked about this as the first effort to “break the ice” by a Chinese court to invalidate administrative “红头文件” – red letterhead documents, i.e., normative documents of the type referenced in the JI. The court reportedly also experimented in using live testimony and cross-examination in an atypical debate-style process. The pleadings were also entered into as part of the opinion after the party’s signatures confirmation. The decision does not yet appear to be on line, but a summary is attached here (in Chinese).

Another procedurally significant decision involved the appearance of dissenting opinions in IP cases. Here again, the Beijing IP court is a trail and trial blazer in this recent experiment. The case involved Ernest Borel (Far East) Co. Ltd. and China’s Trademark Review and Adjudication Board. There were different opinions by the court on proof of copyright in the logo of Ernest Borel, including use of the original trademark registration and a subsequent copyright registration to prove that the design belonged to Ernest Borel. The minority opinion supported using these two registrations as a proof of copyright ownership. Ernest Borel was attempting to prove that it owned the copyright in a logo that was being used by a Shenzhen company in its trademark registration (深圳市依波路保健科技有限公司).

Two notable experiments by an experimental court!

Note that the logo at the top of this article is a logo of Ernest Borel that I found online if for illustrative purposes only. It does not imply any endorsement of the positions here by Ernest Borel. It may not also be the trademark that is the subject of the pending case. Any trademarks and copyrights are the property of their respective owners.

The opinions reflected here are not necessarily the opinions of any organization, company, or government. They solely reflect the personal opinions of Mark Cohen and other named authors. When referring to this blog in the media, please do not attribute any opinion or comment to anyone other than the author(s).